Social Tech Loses Appeal To Apple Over 'Memoji' Trademark Because Suing Apple Isn't Using The Mark In Commerce

from the trademark-tautology dept

For what it's worth, lawsuits against Apple over emojis are not entirely unheard of. You may recall that Apple was sued by a woman who claimed it was copyright infringement for Apple to have emojis that represent more diverse communities, for instance. But for a truly fun story about Apple being sued, and winning its defense, over emojis, well, you have to go to a case between Apple and a company called Social Tech.

Social Tech sued Apple in 2018, alleging Apple's Memoji personalized emoji feature infringed its trademark covering its app with the same name. U.S. District Judge Vince Chhabria ruled for Apple in 2019.

Indeed. And Social Tech appealed that ruling. So why did the court find for Apple in 2019? Well, because Social Tech couldn't demonstrate that it was actually using the mark in commerce. This is where we'll need to dig into some details.

In 2016 Social Tech filed an intent-to-use trademark application for "Memoji" for use in apps and software. The Trademark Office granted a Notice of Allowance, which essentially gives the go ahead to the applicant to put the mark in actual commerce, after which the UPSTO would approve the mark. Social Tech basically did nothing for 2 years after that, other than to ask for an extension on the Notice of Allowance. Meanwhile, another company called Lucky Bunny LLC filed its own trademark application for "Memoji" for the same class of goods. That application was suspended due to the Social Tech application status. In the summer of 2018, Apple acquired Lucky Bunny and its assets, including the suspended trademark application. In June, Apple announced the acquisition and released a public test version of its new mobile OS that included Lucky Bunny's Memoji software.

And this is where it gets weird. When I said above that Social Tech did nothing for two years before Apple's announcement, that's not entirely true. Social Tech did write a business plan, fund itself internally for $100k, and write up some promotional material. What it didn't do was write a single line of code... until Apple announced the acquisition. Then, and only then, did Social Tech's interest in actually using the Memoji mark in commerce go into overdrive.

The appeal was decided by the court in Apple's favor as a result of all of this, but the details laid out in the judgement are striking.

During the three weeks after Apple’s announcement, Social Tech’s co-founder and president, Samuel Bonet, exchanged a series of emails with a software developer to accelerate the timing of the application’s development. In the first of these emails on June 7, Bonet described the circumstances to be “life changing” and concluded the email with: “Time to get paid, gentlemen.” In a series of subsequent emails, Bonet regularly followed up with the developer on the application’s progress. On June 12, Bonet wrote: “the app needs to erase the background AND the body . . . Of course this may take a little work to get perfect, but as long as we can get close initially, we can start to test and put in commerce.” On the evening of June 13, Bonet wrote to the developer: “[i]n other news . . . the initial letter has been sent to Apple. The process has begun. Peace and wealth!”

Bonet continued to follow up on the application’s progress over the next several days, noting that “the editing feature [was] vital” to “satisfy the ‘editing’ requirement of the trademark.” On June 18, Bonet wrote that Social Tech would release the application for Android in the Google Play Store first, proclaiming: “We are lining up all of our information, in preparation for a nice lawsuit against Apple, Inc! We are looking REALLY good. Get your Lamborghini picked out!”

It goes on from there, but the general gist is that Social Tech was very specifically attempting to finally get its mark pushed through simply in order to file these trademark suits and "get paid." And that, sadly for Social Tech, does not satisfy the requirement for using the mark in commerce. And, since the entire enterprise of putting a broken app in commerce was done simply to get the trademark for "Memoji" and file the lawsuit, those don't actually count either.

As a result, the court found for Apple.

The panel held that mere adoption of a mark without bona fide use in commerce, in an attempt to reserve rights for the future, is insufficient to establish rights in the mark under the Lanham Act. Use in commerce requires use of a genuine character, in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind. Considering the totality of the circumstances, including relevant non-sales activities, the panel agreed with the district court that the evidence in the record showed that Social Tech’s use of the MEMOJI mark was not bona fide in commerce. Accordingly, Apple was entitled to cancellation of Social Tech’s trademark registration.

When it comes to intellectual property, it's nice to see grifting not work out for the grifters once in a while.

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Filed Under: emoji, lawsuits, memoji, shakedown, trademark
Companies: apple, lucky bunny, social tech


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  • icon
    That One Guy (profile), 15 Jul 2021 @ 4:02pm

    Begone parasite

    Yeah, sitting on a trademark and only bothering to do anything with it after a wealthy company starts to do something similar and then crowing about how the pending lawsuit for trademark infringement is going to make you rich positively reeks of trademark trolling, where the goal was never to gain from the mark itself but sit on it and sue anyone who came along and tried something similar.

    reply to this | link to this | view in chronology ]

  • icon
    That Anonymous Coward (profile), 15 Jul 2021 @ 4:05pm

    Dance like no one is watching,
    Email like it will be read aloud in court.

    reply to this | link to this | view in chronology ]

    • icon
      That One Guy (profile), 15 Jul 2021 @ 4:48pm

      'But... that completely screws our argument/case!'

      The looks on their faces when they were told that their emails were going to be made available to Apple and the court must have been priceless.

      reply to this | link to this | view in chronology ]

      • icon
        That Anonymous Coward (profile), 15 Jul 2021 @ 4:54pm

        Re: 'But... that completely screws our argument/case!'

        All of these cases where the emails were smoking guns & still they think it'll never happen to me, I'm to smart.

        reply to this | link to this | view in chronology ]

      • identicon
        Bobvious, 15 Jul 2021 @ 5:11pm

        Re: 'But... that completely screws our argument/case!'

        "The looks on their faces when they were told that their emails were going to be made available to Apple and the court must have been priceless."

        You can keep your cards close to your chest, but Apple played the master card here.

        reply to this | link to this | view in chronology ]

    • icon
      Stephen T. Stone (profile), 15 Jul 2021 @ 5:35pm

      A saying along those lines:

      Before you send a message, imagine it with the words “Exhibit A” attached.

      reply to this | link to this | view in chronology ]

  • icon
    Mononymous Tim (profile), 15 Jul 2021 @ 6:56pm

    “Time to get paid, gentlemen.”

    The greedy trademark troll version of "Hold my beer."

    Waaa, waaa, waaaaaaaaa....

    reply to this | link to this | view in chronology ]


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